Decision for dispute CAC-UDRP-108780

The Panel is unaware of any other pending or decided legal proceedings in respect of the domain names <capsnewera.com> and <mexico-newera.com> and <neweracapvip.com> (the "disputed domain names").

The Complainant, New Era Cap, LLC, owns numerous trade marks for NEW ERA, including:

• United States trade mark registration no. 74450431 (figurative mark), registered on 21 January 1997; and

• United States trade mark registration no. 7275331 (word mark), registered on 16 January 2024.

The Complainant also owns and operates numerous domain names incorporating its NEW ERA trade mark, including <neweracap.com>, registered in 1996.

A. Complainant's Assertions

The Complainant is a United States company founded in 1920 and is a well-known manufacturer of headwear and apparel. It has supplied on-field caps for Major League Baseball since 1993 and markets and sells its products internationally through official websites, authorised retailers and licensing arrangements.

The Complainant markets and sells its products through official websites and maintains an extensive presence on major social media platforms.

B. Respondent's Position

The Respondent did not file a Response.   

C. Disputed Domain Names

The disputed domain names were registered in April 2026.

The evidence indicates that the disputed domain names were used for websites displaying the Complainant's NEW ERA trade mark and presenting themselves as offering genuine NEW ERA products. The Complainant contends that the websites impersonated it and offered counterfeit products. Following notices submitted by the Complainant to the relevant service providers, the websites subsequently became inactive.

A. Complainant

A.1 The disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights

The Complainant submits that each disputed domain name incorporates its NEW ERA trade mark in its entirety. The addition of descriptive or geographical terms, including "mexico", "cap", "caps" and "vip", does not prevent a finding of confusing similarity.

A.2 The Respondent has no rights or legitimate interests in respect of the disputed domain names

The Complainant submits that the Respondent has never been authorised to use its NEW ERA trade mark, is not commonly known by the disputed domain names and has no rights or legitimate interests in them.

The Complainant further contends that the disputed domain names were used for websites offering counterfeit NEW ERA products while impersonating the Complainant.

A.3 The disputed domain names were registered and are being used in bad faith

The Complainant submits that the Respondent registered the disputed domain names with knowledge of the Complainant's well-known NEW ERA trade mark and intentionally used them to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant.  

A.4 Consolidation Request

The Complainant requests consolidation of the Complaint pursuant to paragraphs 3(c) and 10(e) of the UDRP Rules. It submits that, notwithstanding the differing registrant details disclosed by the registrar, the disputed domain names are subject to common control.

In support of that request, the Complainant relies upon the close temporal proximity of the registrations, the use of the same registrar, hosting provider and IP address, the common incorporation of the Complainant's NEW ERA trade mark, the similar naming pattern adopted, the substantially identical appearance and operation of the associated websites, and the apparent unreliability of the disclosed registrant information.

A.5 Relief Sought

The Complainant requests that the disputed domain names <capsnewera.com> and <mexico-newera.com> and <neweracapvip.com> be transferred to it in accordance with paragraph 4(i) of the UDRP Policy.

B. Respondent

No Response was filed. The Panel proceeds on the basis of the uncontested evidence submitted by the Complainant and may draw such inferences as it considers appropriate pursuant to Rule 14(b) of the UDRP Rules.

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP Policy).

The Complainant has, to the satisfaction of the Panel, shown that the Respondent has no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the UDRP Policy).

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP Policy).

1. Consolidation

The Complaint has been brought against multiple respondents in respect of multiple disputed domain names.

Paragraph 3(c) of the UDRP Rules permits a complaint to relate to more than one domain name only where those domain names are registered by the same domain-name holder. Paragraph 10(e) of the UDRP Rules nevertheless confers upon the Panel a discretion to consolidate multiple domain name disputes where appropriate.

The Panel has considered the Complaint, the UDRP Rules, and the approach reflected in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Select UDRP Questions (the "WIPO Jurisprudential Overview 3.1").

In determining whether consolidation is appropriate, panels generally consider whether the disputed domain names are subject to common control and whether consolidation would be fair and equitable to all parties while promoting procedural efficiency.

Although the registrar verification disclosed different registrant names and contact details, the Panel is satisfied, on the balance of probabilities, that the disputed domain names are subject to common control.

The Panel reaches that conclusion having regard to the totality of the evidence, including the close temporal proximity of the registrations, the common naming pattern adopted, the incorporation of the Complainant's NEW ERA trade mark in each disputed domain name, and the substantially identical appearance, operation and commercial purpose of the associated websites.

Considered collectively, these circumstances establish, on the balance of probabilities, that the disputed domain names are subject to common control, notwithstanding the differences in the disclosed registrant details.

Accordingly, the Panel grants the Complainant’s request for consolidation.

2. Miscellaneous

The Panel is satisfied that all procedural requirements under the UDRP Policy, the UDRP Rules and the CAC Supplemental Rules have been met. There is no other reason why the Panel should refrain from issuing this procedural determination.

A. Applicable Legal Framework

Pursuant to Rule 15 of the UDRP Rules, the Panel decides on the basis of the statements and evidence submitted, in accordance with the UDRP Policy, the UDRP Rules, and any applicable principles of law.

Under paragraph 4(a) of the UDRP Policy, the Complainant must establish, on the balance of probabilities, that:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has established registered rights in the trade mark NEW ERA.

Each disputed domain name incorporates the Complainant's NEW ERA trade mark in its entirety. The addition of descriptive or geographical terms, including "mexico", "cap", "caps" and "vip", does not prevent the Complainant's trade mark from remaining readily recognisable within the disputed domain names. Nor does the generic Top-Level Domain <.com> affect the assessment.

The Panel therefore finds that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the UDRP Policy.  

C. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has not been authorised to use the Complainant's NEW ERA trade mark, is not commonly known by the disputed domain names and has chosen not to participate in this proceeding.  

The evidence before the Panel shows that the disputed domain names were used for commercial websites prominently displaying the Complainant's NEW ERA trade mark. The Respondent has not been authorised to operate those websites, has not explained its use of the disputed domain names, and has not demonstrated any bona fide offering of goods or services or legitimate non-commercial or fair use.

The use of the disputed domain names to impersonate the Complainant and to offer allegedly counterfeit versions of its products cannot confer rights or legitimate interests under the UDRP Policy.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names within the meaning of paragraph 4(a)(ii) of the UDRP Policy.

D. Registered and Used in Bad Faith

The Panel is satisfied that the Complainant's NEW ERA trade mark had become well established internationally long before the registration of the disputed domain names. Each disputed domain name wholly incorporates that trade mark together with descriptive or geographical terms likely to reinforce an impression of association with the Complainant.

The evidence establishes that the disputed domain names were used for websites displaying the Complainant's NEW ERA trade mark and presenting themselves as offering genuine NEW ERA products. The Complainant contends that the websites impersonated it and offered counterfeit products, and the Respondent has neither challenged that evidence nor provided any explanation for its conduct.

In the circumstances, the Panel is satisfied that the Respondent intentionally sought to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the associated websites and the products offered through them. Such conduct falls squarely within paragraph 4(b)(iv) of the UDRP Policy.

The subsequent inactivity of the websites following the Complainant’s complaints to the relevant service providers does not negate the Respondent's prior bad faith registration and use.

Accordingly, the Panel concludes that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the UDRP Policy.

E. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the UDRP Policy and Rule 15 of the UDRP Rules, the Panel orders that the disputed domain names <capsnewera.com> and <mexico-newera.com> and <neweracapvip.com> be transferred to the Complainant, New Era Cap, LLC.